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Archived updates for Friday, January 25, 2008

Inequitable Conduct for Failure to Disclose Employee's Notes About Poster for Which Abstract was Submitted

In Monsanto v. Bayer Bioscience (January 25, 2008), the federal Circuit affirmed inequitable conduct where, although Bayer disclosed the Barnes Abstract during patent prosecution, it did not disclose the notes taken by one of its employees from the poster that was described in the Abstract:

Although Bayer disclosed the Barnes Abstract during patent prosecution, it did not disclose the notes taken by one of its employees, Dr. Celestina Mariani, regarding the Barnes Poster, to which the abstract was in reference, nor the information contained in the notes. Mariani had attended the conference and personally viewed Barnes’ poster. She explained in her deposition, which was presented at trial, that the notes were made while in front of the poster and included copies of "the same schemes that were presented on the poster." Monsanto II, slip op. at 19 (quoting Mariani’s deposition testimony ("Mariani depo.")). The poster contained much more information than the abstract itself. Id. at 24. In the deposition, Mariani carefully and extensively described the content of her handwritten notes.

. . . The undisputed evidence established that the arguments Bayer made to the Examiner to overcome the rejection based on the Barnes Abstract cannot be reconciled with the information about the Barnes Poster disclosed in the Mariani notes. . . .

. . . We hold that the Mariani notes are material because they directly contradict arguments Bayer made to the PTO in support of patentability. We do not suggest that all internal documents of potential relevance must be submitted to the PTO as a matter of course. Rather, it is the particular circumstances that render the internal documents material in this case. We need not decide whether, as the district court found, they are also material because the notes by themselves would establish a prima facie case of unpatentability of the ’565 patent’s claims. But certainly their materiality is augmented by the fact that Mariani’s notes demonstrate, in significantly more detail than the Barnes Abstract, that Barnes had already disclosed that a 67 kD N-terminal fragment of a Bt toxin protein retained toxicity either alone or fused to a NPT-II protein and taught a chimeric gene comprising the 67 kD Bt toxin gene and a plant promoter. Bayer was attempting to claim a nearly identical invention—a chimeric gene comprising a gene encoding a 60 to 80 kD Bt toxin protein and a plant promoter. Accordingly, we affirm the district court’s finding that the Mariani notes were highly material.

. . . The district court did not clearly err in finding that Bayer’s "attempts to establish subjective good faith sufficient to overcome the intent to mislead [were] not persuasive" and concluding that Meulemanns intentionally withheld the material Mariani notes with the intent to deceive the PTO. Monsanto II, slip op. at 97-98. Meulemanns himself admitted that he was aware of the notes during the prosecution of the ’565 patent, that he had discussed the content of the notes with Mariani, and that the notes would have been important to the Examiner if the notes contained reliable information. The only explanation that Meulemanns or Bayer provided for failing to disclose the information contained in the notes was that the notes were not decipherable standing alone and that when Meulemanns discussed the notes with Mariani, Mariani had been unable to remember "anything" about them. The district court, however, found this explanation to lack credibility, particularly in light of Mariani’s ability to testify with clarity and detail about the contents of the notes during her deposition. We find nothing clearly erroneous in the court’s credibility finding. . . . And absent a credible reason for Meulemanns to have not understood the content of Mariani’s notes after having discussed them with Mariani, the district court did not clearly err in inferring the requisite intent. See Bruno Indep. Living Aids, 394 F.3d at 1354. Intent is easily inferred when, as here, an applicant makes arguments to the PTO that it knows, or obviously should have known, are false in light of information not before the examiner, and the applicant knowingly withholds that additional information. See Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359, 1368 (Fed. Cir. 2007) (holding that an applicant’s argument that the information was withheld in "‘good faith’ does not negate an intent to manipulate the evidence" when "an applicant knows or obviously should know that information would be material to the examiner").

Having found without clear error that Bayer intentionally withheld material information when it failed to disclose the Mariani notes despite taking a position at the PTO that was refuted by the information contained in the notes, the district court had discretion to hold the ’565 patent unenforceable for inequitable conduct.

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